(163) Electronic Exchange of Non-Participating Office
Priority Documents Between the
Japan Patent Office and the
United States Patent and Trademark Office
Requests by the USPTO for non-JPO priority documents from the JPO under
37 CFR 1.55(d)(2).
Since April 20, 2009, the United States Patent and Trademark Office
(USPTO) has had the ability to electronically retrieve non-participating
office priority documents from the Japan Patent Office (JPO) as requested
by an applicant under 37 CFR 1.55(d)(2) when applicant has also filed a
corresponding application with the JPO and that corresponding application
contains a non-participating office priority document. For example, if
an applicant files a U.S. application under 35 U.S.C. 111(a) claiming
priority to an application previously filed with a non-participating office
(e.g., an Australia national application filed with the Australian Patent
Office) and the applicant desires the USPTO to electronically obtain that
priority document through the Priority Document Exchange (PDX) system from
a corresponding JPO application file, the applicant is still required to
file a request to retrieve the electronic priority document. The applicant
must file the request to retrieve in a separate document (e.g., form
PTO/SB/38) under 37 CFR 1.55(d)(1)(i), identifying both the JPO application
number and the application number of the Australia priority application.
This is the same procedure that went into effect between the USPTO and the
European Patent Office (EPO) on January 16, 2007. See "Changes to
Implement Priority Document Exchange Between Intellectual Property Offices,"
published in the Federal Register at 72 FR 1664 (January 16, 2007) and
"Simplification of the Electronic Exchange of Priority Documents," published
in the Off. Gaz. Patent Office at 1319 OG 150 (June 26, 2007). The JPO will
provide the USPTO access to priority documents issued by a non-participating
office and filed with the JPO, unless the non-participating office has
expressly requested the JPO do otherwise.
Applicants continue to bear the ultimate responsibility for ensuring
that the priority document is filed by the time of patent grant as required
under 37 CFR 1.55(a). Accordingly, applicants are encouraged to check
Private PAIR as necessary to confirm receipt of appropriate documents.
Priority documents retrieved from the JPO will bear the IFW document title
of "Priority documents electronically retrieved by USPTO from a
participating IP Office."
Access by the JPO to U.S. applications containing non-USPTO priority
documents.
Since April 1, 2009, the JPO has had the ability to electronically
retrieve non-USPTO priority documents contained in a U.S. application from
the USPTO. However, the USPTO will release copies of non-USPTO priority
applications to the JPO only if the U.S. application containing the
non-USPTO priority application has received a foreign filing license in
accordance with 37 CFR 5.11, and (1) the applicant of the U.S. application
has provided an appropriate written authority to permit access to the
application by participating offices (e.g., form PTO/SB/39 or form
PTO/SB/01) under 37 CFR 1.14 and 35 U.S.C. 122 (if the U.S. application has
not yet been published); or (2) the U.S. application has been published or
patented. Written authority under 37 CFR 1.14 and 35 U.S.C. 122 may be
provided by filing in a U.S. provisional or nonprovisional application
either a properly signed (1) "Authorization to Permit Access to Application
by Participating Offices" (form PTO/SB/39); or (2) "Declaration for Utility
or Design Application" (form PTO/SB/01) in which the "Authorization to
Permit Access by Participating Offices" has been checked. Form PTO/SB/39 is
available from the USPTO Internet Web site at
http://www.uspto.gov/web/forms/sb0039.pdf. Form PTO/SB/01 is also available
from the USPTO Internet Web site at
http://www.uspto.gov/web/forms/sb0001.pdf. Note that the USPTO cannot

currently transmit a non-USPTO priority document contained in design
applications or PCT international applications through the PDX system.
Similarly, design applications cannot be transmitted through the PDX system.
Applicants are, however, advised that if the applicant files an
Authorization to Permit Access to Application by Participating Offices
(e.g., using either form PTO/SB/39 or PTO/SB/01), there is no procedure in
place to promptly revoke the authorization so as to prevent access by a
participating office. Accordingly, if an applicant does not wish a
participating office to have access to the applicant's application, the
applicant should not file the Authorization to Permit Access to Application
by Participating Offices. Instead the applicant should use the traditional
procedure of obtaining and directly providing a certified copy of the
non-USPTO priority document to any participating office in which the
applicant files a patent application claiming priority to the non-USPTO
priority document.
Additional information concerning access to non-USPTO priority documents
contained with a U.S. application.
Applicants are strongly encouraged to file written authority in
accordance with 37 CFR 1.14 and 35 U.S.C. 122 for any U.S. application
containing a non-USPTO priority document in which there is any chance that
they will file a subsequent counterpart application in the JPO (or EPO)
so that the JPO (or EPO) may timely and successfully retrieve the non-USPTO
priority document from the U.S. application containing the non-USPTO
priority document at no charge to applicant.
Applicants are advised that JPO (and EPO) regulations require a copy of
a priority document to be filed with the corresponding JPO (or EPO)
application no later than 16 months from the priority date. Because U.S.
applications are ordinarily published by the USPTO at 18 months from the
earliest effective filing date, most U.S. applications that contain the
non-USPTO priority document that is the basis for a foreign priority claim
in a JPO (or EPO) application will not be published by the time the
applicant is required to provide a copy of the non-participating office
application to the JPO (or EPO). Therefore, in most cases it will be
necessary to provide the USPTO with appropriate written authorization
(under 35 U.S.C. 122 and 37 CFR 1.14) for the JPO (or EPO) to obtain a copy
of the non-USPTO priority document from the USPTO, e.g., by submitting a
properly signed form PTO/SB/39.
Neither the USPTO nor the JPO or the EPO charge a fee to either
the applicant or the other office for this service.
The Korean Intellectual Property Office (KIPO) does not allow
non-participating office priority documents to be retrieved by the USPTO.
Similarly, the KIPO does not retrieve non-participating office priority
documents from the USPTO.
For further information please contact one of the individuals
identified below:
Don Levin OR Tamara Graysay OR Mark Polutta
TDA Project Manager Special Program Examiner Senior Legal Advisor
United States Patent United States Patent United States Patent
and Trademark Office and Trademark Office and Trademark Office
571-272-3785 571-272-6728 571-272-7709
PDX@uspto.gov PDX@uspto.gov PDX@uspto.gov
June 3, 2009 JOHN J. DOLL
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
[1343 OG 348]